Complainant is Instagram, LLC of Menlo Park, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Omer Ulku of Amasya, Turkey.
The disputed domain names <supportinsta.com> and <supportinstgram.com> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain names.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on September 3, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
According to the Complaint, Complainant operates the online photo and video sharing social network application Instagram. Instagram was launched in October 2010 and since then has rapidly developed, being one of the fastest growing social media. Currently, Instagram has over 700 million monthly active users and 400 million daily active users worldwide. As per the Complaint, Instagram enjoys goodwill and renown worldwide, including Turkey, while its popularity is repeatedly reported in special technology publications and the media, including publications and media in Turkey. Complainant was acquired by Facebook Inc. in 2012.
Instagram application is ranked as the 4th most downloaded application in the world and 2nd in Turkey according to Annie Top App rankings in 2018. Furthermore, Complainant’s website “www.instagram.com” is ranked as the 13th most visited website in the world and 11th in Turkey according to the web information company Alexa. Turkey ranks within the 5 top countries worldwide with the most users of Instagram in 2018 and 2017 according to “www.statista.com” and “www.mapuniversal.com” respectively. As per the Complaint, “insta” is the commonly recognised abbreviation of Instagram.
Complainant is the owner of a number of trademark registrations which consist of or include the words “insta” and/or “instagram” and of domain names containing the word “instagram”, such as <instagram.com>, <instagram.de>, <instagram.dk>, <instagram.pk>, <instagram.ch> and <instagram.ae>.
Complainant’s trademark registrations for the INSTA and INSTAGRAM marks include:
a) International trademark registration INSTAGRAM, no 1129314, registered on March 15, 2012, with protection also in Turkey, for goods and services in international classes 9 and 42;
b) United States trademark INSTAGRAM no 4146057, filed on September 19, 2011, registered on May 22, 2012 (first use in commerce October 6, 2010) for goods in international class 9;
c) European Union trademark registration INSTAGRAM, no 014493886, filed on August 20, 2015, registered on December 24, 2015 for goods and services in international classes 25, 35, 38, 41 and 45;
d) Chilean trademark registration INSTA, no 1213661, filed on November 20, 2015, registered on July 20, 2016, for goods in international class 9;
e) Malaysian trademark INSTA, no 2015069514, filed on November 19, 2015, registered on September 8, 2016, for goods in international class 9; and
f) Philippines trademark INSTA, no 506617, filed on November 20, 2015, registered on May 18, 2017, for goods in international class 9.
The first Domain Name <supportinsta.com> was registered on January 11, 2018 and the second Domain Name <supportinstgram.com> was registered on May 27, 2018.
As per the Complaint, both Domain Names resolve to blocked, inactive pages, following a takedown of the respective websites. A notice mentioning that the sites were taken down, because of risk that they might cause installation of software or disclosure of personal information like password, appeared on both resolving pages on at least May 31, 2018 as regards the first Domain Name and July 25, 2018 as regards the second. No further information is provided in the Complaint as regards the website to which the second Domain Name resolved prior to the take down. As regards the first Domain Name, per the Complaint, before the take down requested by Complainant, it resolved to a website that displayed - at least on March 23, 2018 - Complainant’s logo and trademark and contained a page headed “Verified Badges/Instagram Help Center” mimicking the typeface and layout of Complainant’s official Help Center available at “https:/help.instagram.com/”. As per Complaint, “verified badges” is a service provided by Complainant for endorsing authentic Instagram accounts of public figures, celebrities and brands. Users were then asked to enter their confidential account information, namely the Instagram user name, the email address associated with the account and the account password, supposedly for the purpose of obtaining their “verified badge”. As per Complaint, the website also displayed at the foot of the screen several links, such as “About us”, “Help” and “Terms”, which redirected to Facebook’s official website at “http://www.facebook.com”.
As per the Complaint, the first Domain Name <supportinsta.com> was also used by Respondent - at least on one occasion on February 4, 2018, reported to Complainant - to send phishing emails targeting Instagram users. Specifically, such emails were configured so as to be displayed as being sent by Complainant and contained the following message: “We regret to inform you that your account will be permanently deleted from our servers within 12 hours of the review”. The users were then redirected to a fake login page and were required to enter their confidential Instagram account information, such as user ID and password.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant has demonstrated rights through registration and use on the INSTA and INSTAGRAM marks.
As regards the first Domain Name <supportinsta.com>, the Panel finds that this is confusingly similar with the INSTA and the INSTAGRAM trademarks of Complainant.
The first Domain Name incorporates the INSTA trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382).
The word “support” which is added in the first Domain Name is also disregarded as it is a non-distinctive, generic term (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Furthermore, the first Domain Name incorporates in its entirety the “insta” portion of the INSTAGRAM trademark of Complainant, namely its first and dominant element. The dominant feature “insta” of the mark is recognisable in the first Domain Name thereby making it confusingly similar to the INSTAGRAM trademark (Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382; Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair, WIPO Case No. D2015-1001; RapidShare AG, Christian Schmid v. Protected Domain Services/Dmytro Gerasymenko, WIPO Case No. D2010-1071; WIPO Overview 3.0, section 1.7).
This also in view of the repute of the INSTAGRAM mark and the content of the website to which the first Domain Name resolved prior to the take down, namely a website containing a page mimicking Complainant’s help page and requesting personal information from users (WIPO Overview 3.0, section 1.15).
The Panel finds that the first Domain Name <supportinsta.com> is confusingly similar to the INSTA and the INSTAGRAM trademarks of Complainant.
As regards the second Domain Name, the Panel finds that this is confusingly similar with the INSTAGRAM trademark of Complainant.
The second Domain Name <supportinstgram.com> incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The omission of the letter “a” in the “insta” portion of the second Domain Name is disregarded, as it is not readily noticeable (Minerva S.A. v. TT Host, WIPO Case No. D2016-0384; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382). Furthermore, such omission is an obvious or intentional misspelling of Complainant’s trademark INSTAGRAM which further supports the finding of confusing similarity to such trademark (WIPO Overview 3.0, section 1.9).
The word “support” which is added in the second Domain Name is also disregarded as it is a non-distinctive, generic term (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, WIPO Overview 3.0, paragraph 1.8).
The gTLD “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel finds that the second Domain Name <supportinstgram.com> is confusingly similar to the INSTAGRAM trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as regards the first Domain Name, Complainant demonstrated that a) it resolved to a webpage that displayed Complainant’s logo and trademark, also in the address bar, and contained a page headed “Verified Badges/Instagram Help Center” mimicking the typeface and layout of Complainant’s official Help Center, b) users were requested to provide personal information on this page in the context of the supposedly genuine service “verify badges”, c) the first Domain Name was also used to create an email address and on at least one occasion send fraudulent emails to Instagram users requesting them to provide personal information and leading them to a false Instagram log-in page and d) the website contained links which were redirecting users to Facebook’s official website.
From the above it follows that Respondent was not using the first Domain Name in connection with a bona fide offering of goods or services. To the contrary, it registered and was using it for the purpose of making illegitimate use of Complainant’s marks by misleading Internet users (Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Pfizer Inc. v. Ubrokerage inc, WIPO Case No. D2015-1927; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; WIPO Overview 3.0, sections 2.5.2, 2.5.3).
Furthermore, the use of the first Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).
Lastly, the first Domain Name, per the Complaint, redirected to the website of Facebook, current owner of Complainant. A respondent’s use of a complainant’s mark to redirect users under such circumstances would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).
As regards the second Domain Name, this employs a misspelling (omission of letter “a” from the “insta” portion of Complainant’s trademark) which signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; WIPO Overview 3.0, section 1.9).
This also in view of the fact that the second Domain Name was registered subsequent to the first Domain Name and to the use Respondent made of it as described above, indicating that Respondent systematically registered domain names that infringe trademarks of Complainant, a factor that further supports the finding of lack of legitimate interest (WIPO Overview 3.0, sections 2.5.2, 2.5.3).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
As per Complaint, Complainant’s INSTA and INSTAGRAM trademarks are well-known throughout the world in connection with online photo-sharing social network (Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669; Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078, Instagram, LLC v. Perfect Privacy, LLC and Lo Tim Fu, WIPO Case No. D2017-1951; Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Candace Neeley, Pay Day Global Limited, WIPO Case No. D2017-1752; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382; Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736; Instagram, LLC v. Levent Aslan, Turkticaret.net, WIPO Case No. D2017-1734; Facebook, Inc. and Instagram, LLC v. Adam Szulewski, WIPO Case No. D2016-2380; Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, WIPO Case No. D2016-1710; Instagram, LLC v. Muhittin Ozer, WIPO Case No. D2016-0584; Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd / weiwei, WIPO Case No. D2016-0409; Instagram, LLC v. Zhou Murong, WIPO Case No. D2014-1550). Furthermore, INSTAGRAM is an invented word without meaning (Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078).
Because Complainant’s marks had been widely used and registered at the time of the Domain Name registrations, the Panel finds it more likely than not that Respondent had Complainant’s marks in mind when registering the Domain Names.
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Names were registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of the marks on the Internet (“instagram.com”) (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely photo-sharing social network provided online.
Respondent could have searched the United States or European Union or Turkish trademark registries and should have found Complainant’s prior registrations in respect to INSTAGRAM (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The first Domain Name incorporates fully Complainant’s mark INSTA and the characteristic part “insta” of Complainant’s well-known mark INSTAGRAM, while the second Domain Name incorporates in whole Complainant’s well-known mark INSTAGRAM, with a minor misspelling. Employing a misspelling in this way signals an intention on the part of Respondent to confuse users seeking or expecting Complainant.
Both Domain Names include the same additional term “support”. The use of the word “support” demonstrates targeting of Complainant’s marks. It follows that Respondent was well aware of Complainant’s marks when registering the Domain Names.
As regards bad faith use, the fact that the first Domain Name was used for the creation of a website, that contained the trademarks and logo of Complainant and mimicked Complainant’s official Help Center webpage, for the purpose of soliciting personal information from users, is a clear indication that the first Domain Name was being used in bad faith (Sydbank A/S v. Syd Bank, WIPO Case No. D2015-0324; Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736; Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Candace Neeley, Pay Day Global Limited, WIPO Case No. D2017-1752; Groupe Partouche v. Madarin Data LTD, Pousaz Raymond, WIPO Case No. D2010-1649; DivX, LLC v. PrivacyProtect.org / Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0600; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488; WIPO Overview 3.0, section 3.4). Use of a domain name for per se illegitimate activity such as phishing is manifestly considered evidence of bad faith (WIPO Overview 3.0, section 3.1.4).
Furthermore, the first Domain Name was used to create an email address and send fraudulent emails also with a view to soliciting personal information from their recipients by conveying the false impression that the request originated from Complainant. Use of a domain name for sending deceptive emails, phishing, identity theft, or malware distribution may also constitute bad faith (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No.. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc. WIPO Case No. D2014-1702; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and WIPO Overview 3.0, section 3.3 and 3.4).
Lastly, the redirection of the website under the first Domain Name to Complainant’s current owner, Facebook, reinforces Respondent’s targeting of the Complainant and also supports registration in bad faith, (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367; WIPO Overview 3.0, section 3.1.4).
The Panel considers the following factors as regards the first Domain Name: (i) the reputation of Complainant’s marks, (ii) the failure of Respondent to submit a response and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated it was used a) to create a website with a page mimicking Complainant’s official Help Center, where users were asked to disclose personal information and were redirected to the Facebook website and b) to send phishing emails to Instagram users.
In addition to the above under i) and ii), the Panel considers the following factors as regards bad faith use of the second Domain Name: i) Respondent’s knowledge of Complainant’s rights, evidenced from the misspelling of the “insta” portion of the second Domain Name and the degree of notoriety of Complainant’s INSTAGRAM trademark (Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods, WIPO Case No. D2016-0256) and ii) Respondent’s registration of the second Domain Name subsequent to the bad faith registration and use of the first Domain Name, which targeted also Complainant’s marks, thereby indicating the implausibility of any good faith use to which the second Domain Name may be put (Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382; WIPO Overview 3.0, section 3.1.2, 3.3).
Lastly, Respondent’s bad faith registration and use of the Domain Names is further indicated by the fact that Respondent has apparently provided false contact information to the Registrar, as Respondent demonstrated and follows from the fact that correspondence sent by WIPO to Respondent’s address was noted as undelivered (KT Intellectual Property Holding Company, LLC v. Henry Findstein, SPB Resource & Asset Management Group, WIPO Case No. D2017-2047; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; WIPO Overview 3.0, section 3.2.1).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <supportinsta.com> and <supportinstgram.com> be transferred to Complainant.
Marina Perraki
Sole Panelist
Date: September 17, 2018